Seattle Trademark Lawyer

 
Restaurant wars: The owner of Peso’s (left) has sued the owners
of The Matador over trade dress, dilution and other issues.

As STL readers may recall, El Diablo, Inc., and its owner sued Mel-Opp & Griff, LLC, and others in King County Superior Court for trade dress infringement, dilution, and other claims relating to the parties’ competing Tex-Mex restaurants and bars.

Plaintiffs own Peso’s Kitchen & Lounge in lower Queen Anne. Defendants own The Matador restaurants in Ballard, West Seattle, and other locations. 

In June, defendants brought several motions for summary judgment, including one seeking dismissal of plaintiffs’ trademark-related claims based on laches. In summary, defendants argued that plaintiffs’ alleged three-year delay in bringing suit unfairly prejudiced them.

Plaintiffs argued in response that laches applies under the Lanham Act because it does not contain an express limitations period but does not apply to their state trademark claims because a statutory limitations period applies instead.

On July 8, King County Superior Court Judge Catherine Shaffer denied the laches motion in a minute order. Unfortunately, the order does not explain the court’s reasoning.

The court also denied defendants’ motion on causation and damages. It granted defendants’ motion dismissing plaintiffs’ tortious interference, breach of fiduciary duty, and fraud claims.

The court previously denied defendants’ motion for summary judgment dismissal of plaintiffs’ dilution claim.

Earlier this month, the court amended the case schedule setting the parties’ expected three-week jury trial for Sept. 15.

The case cite is El Diablo, Inc. v. Mel-Opp & Griff LLC, No. 07-2-01203-6 SEA (King County Super.) (Shaffer, J.).

As the Trademark Blog reports, American Guarantee & Liability Insurance Co. is balking at the prospect of paying any part of the $305M judgment Adidas America, Inc., obtained against Payless Shoesource, Inc., earlier this year. The insurer filed suit on July 24 in the District of Kansas for a declaration that it is not liable under any of its policies. 

Here’s a sampling of the reasons why the insurer says it need not pay Payless’ claim:

• “The jury’s verdict in favor of adidas in the Underlying Lawsuit is not for damages for ‘advertising injury’ or ‘personal advertising injury under any of the American Guarantee Excess Policies as defined in the relevant policy provisions.”
• “None of the damages awarded by the jury are damages caused by advertising, Advertising Injury or Personal Advertising Injury; thus the awarded damages do not have the necessary causal connection to be covered under the policies.”
• “The jury’s specific findings in favor of adidas on its claims for dilution of both trademark and trade dress and on its claims for unfair and deceptive practices, as well as its finding that Payless acted willfully and its award of Payless’ profits to adidas, and its award of punitive damages to adidas, all establish that the jury found Payless’ conduct to be knowing and intentional within the meaning of [the policies’] exclusions.”
• “The jury’s findings and verdict in favor of adidas in the Underlying Lawsuit was for infringement of adidas’s trade dress and trademark rights and are therefore excluded under the Policies.”
• “The jury’s findings and verdict in favor of adidas in the Underlying Lawsuit arises out of and relates to infringing conduct by Payless that began, at the latest, in 1994 when adidas sued Payless for infringement and reached a settlement of that litigation, and Payless was producing two-stripe and four-stripe shoes,” so the award is not covered under the “known-loss doctrine.”
• “Even if the jury’s verdict in favor of adidas in the Underlying Lawsuit fell within the insuring provisions for ‘advertising injury’ or ‘personal and advertising injury’ and was not excluded by any relevant policy provisions under the American Guarantee Policies or barred from coverage by the known-loss doctrine or public policy, the award of damages, when properly allocated among the policy periods, does not trigger any American Guarantee Policy.”

I’m tempted to be quite snarky about how insurance companies never seem to be there when you need them (to put it politely), but if Payless intentionally ripped off Adidas’ trademark, I don’t see why an insurer should be required to foot the bill. Assuming its policies excluded intentional acts, of course.

The case cite is American Guarantee & Liability Ins. Co. v. Payless Shoesource, Inc., No. 08-2337 (D. Kan.).

Forget the Oklahoma City Supersonics, thank goodness. The team’s new owners abandoned their intent-to-use applications for those trademarks less than one week after filing them. (Previous STL discussion here.)

What now appears to be in play is the Oklahoma City Barons, Bison, Energy, Marshalls, Thunder and Wind. Those are the new intent-to-use applications the NBA Development League, LLC, filed with the Patent and Trademark Office on July 21.There are five applications filed for each mark.

As the Seattle Times noted, no applications appear to exist for OKLAHOMA CITY OUTLAWS, TUMBLEWEEDS, RUSTLERS, STEALERS, CARPETBAGGERS or CRIMINALS.

Still wondering why the team’s new owners had to throw a scare into us by filing intent-to-use applications for OKLAHOMA CITY SUPERSONICS when they appeared to be contractually prohibited from having a bona fide intent to use marks containing the word “Supersonics” in connection with their team.

All of the new names seem weak to me, but at least they don’t trade on the legacy the team left behind in Seattle.

On July 22, the unsuccessful plaintiff law firm filed a notice of appeal to the Ninth Circuit in The Christensen Firm v. Chameleon Data Corp. The appeal identifies five alleged errors, including the Western District’s dismissal of its cybersquatting claim against the defendant Web development firm with whom plaintiff contracted, the court’s rulings relating to the parties’ jury trial, and the court’s denial of plaintiff’s motion for a new trial.

Separately, the court today denied the defendants’ motion for attorney’s fees based on their argument that plaintiff’s cybersquatting claim was sufficiently weak to make the case “exceptional.”

As the first Western District case with trademark issues to go the distance in a while, STL posted on this case a bunch. See posts from Feb. 14, Feb. 20, May 5, June 1, and June 23 for background.

The case cite is The Christensen Firm v. Chameleon Data Corp., No. 06-337 (W.D. Wash.) (Zilly, J.)

Since Spam Notes’ Venkat Balasubramani is temporarily off the grid, I’ll pinch hit for him by mentioning that Robert Soloway — Seattle’s very own “Spam King” — was sentenced today. Western District Judge Marsha Pechman gave him 47 months.

Mr. Soloway reportedly sent tens of millions of emails per day and made $700,000 spamming in the last four years.

He will have to pay the $700,000 he received as restitution.

Mr. Soloway told a local TV station he thought the sentence was fair.

Prosecutors had asked for nine years in prison and a fine of between $400,000 and $1 million.

The case reportedly is Washington’s first under the CAN-SPAM Act, which criminalizes the sending of spam.

Graphic credit: Kirotv.com.